DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 12/15/2025, with respect to the objection to claim 21 as set forth in paragraph 2 of the action mailed 9/17/2025, have been fully considered and are persuasive. The objection to claim 21 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 12/15/2025, with respect to the rejection of claims 16-17 under 35 U.S.C. 112(b) as set forth in paragraphs 4-5 of the action mailed 9/17/2025, have been fully considered and are persuasive. The rejection of claims 16-17 has been withdrawn, EXCEPT as noted below.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 16-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 16, it is unclear from the claim limitations, and in light of the specification, what is intended by an “ester-ring epoxy resin” given that the description in said specification does not disclosed epoxy resins having an ester linkage. For example, EP 828, which is provided in the data of Table 3, does not demonstrate ester linkages.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7, 11-13 and 18 and claim 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (WO 2015/080346 A1). The Examiner notes that citations from the ‘346 reference were taken from a machine translation, which is included with the previous action.
Regarding claim(s) 1-2, 4-5, 7 and 18 and claim 22, Cho teaches an adhesive composition that forms an adhesive film (adhesive layer) via coating the adhesive composition on a release film and then UV-cured (UV-curable semi-structural adhesive tape, current claim 22) (page 15, line 20 to page 16, line 10), which said adhesive composition comprising an alicyclic group-containing (meth)acrylic copolymer (polymer base material), an epoxy compound, an initiator a crosslinking agent and which said epoxy compound is present in an amount of 5 to 35 parts by weight per 100 parts by weight of said (meth)acrylic copolymer, which overlaps that presently claimed, towards a balance of the prevention of bubble formation, durability and reliability.
Cho continues to teach that said (meth)acrylic copolymer comprises ((meth)acrylate composition):
(a1) an alkyl (meth)acrylate (second (meth)acrylate monomer) such as, inter alia, ethylhexyl (meth)acrylate (2-ethylhexyl acrylate, current claims 4-5) in an amount of 40 to 65 wt% towards a balance of the prevention of bubble formation, adhesive strength and reliability;
(a2) alicyclic (meth)acrylate in an amount of 10 to 30 wt% towards heat resistance/durability and increased adhesion;
and a (a3) hydroxyl group-containing monomer (first (meth)acrylate monomer) such as, inter alia, 2-hydroxylpropyl (meth)acrylate (secondary hydroxyl group, current claim 2) in an amount of 10 to 40 wt% towards adhesion, durability and the prevention of bubble generation (see page 4, line 5 to page 6, line 10).
Cho instructs that said (meth)acrylic copolymer has a glass transition temperature (Tg) of -35 to -10 ℃, a viscosity at ℃ of 1600 to 8000 cPs and a weight-average molecular weight (Mw) of 1,000,000 to 3,000,000, and that the (meth)acrylic copolymer if formed via solution polymerization by adding a photoradical initiator such as, inter alia, 2,2-dimethoxy-2-phenylacetophenone (acetobenzene initiator, current claim 7) in an amount of 0.01 to 3 parts by weight (effective amount) (page 8, lines 1-21). Cho also instructs that the adhesive composition comprises photocationic initiators (page 10, lines 12-15) such as, inter alia, triarylsulfoniums (current claim 18) in an amount of 0.01 to 3 parts by weight (effective amount) (page 11, lines 6-21).
The Examiner notes that the lower limit of the parts by weight range for the presently recited first (meth)acrylate monomer (i.e., 40 parts by weight). However, the presently claimed invention also recites that the recited (meth)acrylate composition, in addition to the first and second (meth)acrylate monomers, comprises a photoinitiator, a free-radical crosslinker and a chain transfer agent, which would provide the wt% of the second (meth)acrylate monomer in a range that overlaps that disclosed in Cho for the upper limit (i.e., 10 to 40 wt%) of the a3) of the hydroxyl group-containing monomer.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the epoxy compound, the (meth)acrylic copolymer, and the (a1) an alkyl (meth)acrylate and (a3) hydroxyl group-containing monomer in the presently claimed proportions towards the adhesive composition of Cho demonstrating a balance of the prevention of bubble formation, heat resistance, durability, reliability and adhesive strength based on the requirements of the prior art’s intended application as in the present invention.
Regarding claim 3, Cho teaches contemplates a solvent, but Cho does not require one (page 13, line 16 to page 14, line 3).
Regarding claim 11, Cho does not disclose a melting temperature for the adhesive composition, or the portion of the adhesive composition prior art the addition of the epoxy resin and its associated photocationic initiators, but Cho does disclose conventional additive such as, inter alia, softeners, lubricants and plasticizers (page 13, line 16 to page 14,line 3).
Indeed, it would have been obvious to one of ordinary skill before the effective filing date of the present invention to adjust the types and proportions of the additive comprising the adhesive composition of Cho for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards said adhesive composition demonstrating the presently claimed melting temperature range based on the properties required at the prior art’s temperature of use as in the present invention.
Regarding claims 12-13, although Cho does not disclose that the (meth)acrylic copolymer is prepared via adding the above-noted components (e.g., monomer (a1)) to a plastic bag, UV-radiating said components via UV radiation having an intensity of 0.01 to 20 mW/cm2, and then melt extruding the components in the manner presently claimed, further noted above Cho teaches that the (meth)acrylic polymer is formed via photopolymerization with the inclusion of the disclosed photoradical initiator (page 8, lines 1-21). The Examiner notes that UV rays were employed to polymerize the (meth)acrylic polymer (page 21, line 13-19).
Further, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Claim(s) 6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (WO 2015/080346 A1) in view of Kawabe et al. (US 20090258224 A1).
Regarding claims 6 and 9, Cho teaches that the (meth)acrylic copolymer comprises other copolymerizable monomers, but Cho is silent to said other copolymerizable monomers comprising butyl acrylate. Cho is also silent to a chain transfer agent comprising a sulfur-containing or haloalkane chain transfer agent.
However, Kawabe teaches adhesive compositions comprising a (meth)acrylic polymer, which comprises a combination of 2-ethylhexyl (meth)acrylate and n-butyl (meth)acrylate, and further instructs that alkyl (meth)acrylates having branched alkyl groups contributes to the lowering of the Tg (para 0046-0046). Kawabe continues to teach that chain transfer agents such as mercaptan-based compounds are included to control the molecular of the acrylic polymer (para 0081-0082).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide n-butyl acrylate in tandem with the branched 2-ethylhexyl (meth)acrylate, and to include a mercaptan-based chain transfer agent, in the polymerization process of the (meth)acrylic polymer of Cho towards said (meth)acrylic polymer having the Tg and Mw required of the prior art’ intended application as in the present invention.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (WO 2015/080346 A1) in view of Swanson et al. (US 6383958 B1).
Regarding claim 8, Cho teaches that the crosslinking agent is selected from, inter alia, multifunctional (meth)acrylates (page 12, lines 1-21), but is silent to the crosslinking agent comprising an acryloxybenzophenone crosslinking agent.
However, the Applicant’s attention is respectfully reminded that case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
In this spirit, Swanson teaches PSAs comprising acrylic polymers (column 14, line 54 to column 15, line 31) and crosslinking agents such as diacrylates, triacrylates and 4-acryloxybenzophenone (column 15, lines 45-55).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ 4-acryloxybenzophenone as a crosslinker in the adhesives of Cho, and thereby arrive at the presently claimed invention based on the disclosures of the prior art.
Claim(s) 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (WO 2015/080346 A1) in view of Nagasaki et al. (US 5738974).
Regarding claims 14-17, Cho is silent to the disclosed epoxy resins obtained via reaction between a polyphenol, such as bisphenol A, and epichlorohydrin, and comprising an ester-ring epoxy resin having an epoxy equivalent of 150 to 600.
However, the Applicant is respectfully reminded that:
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
In addition, Nagasaki teaches a photopolymerization composition comprising an acrylic acid copolymer and a polyether of epichlorohydrin and bisphenol A, the latter of which is included towards improved film strength and adhesion (column 9, line 65 to column 10, line 15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ a polyether of epichlorohydrin and bisphenol A as the epoxy resin of Cho towards the adhesive comprising the adhesive composition disclosed therein demonstrating improved film strength and adhesion as in the present invention.
Claim(s) 19 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (WO 2015/080346 A1) in view of Feinberg (US 6756443 B2).
Regarding claims 19 and 22, Cho is silent to the disclosed adhesive composition further comprising an ethylene-vinyl-acrylate or ethylene acrylic acid copolymer viscosity modifier, but Cho does instruct that the adhesive composition further comprises conventional additives such as, inter alia, modifying resins (page 13, line 16 to page 14, line 3). See also Sinclair & Carroll Co. v. Interchemical Corp. set forth above.
In addition, Feinberg teaches that ethylene-acrylic acid copolymers are employed as viscosity modifiers (column 6, lines 24-25).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ an ethylene-acrylic acid viscosity modifier based on the resultant viscosity required of the adhesive composition of the prior art as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 12/15/2025, with respect to the rejection of claims 16-17 under 35 U.S.C. 112(b) as set forth in paragraph 4 of the action mailed 9/17/2025, have been fully considered but they are not persuasive.
The claim amendments have not amended claim 16, nor has the Applicant argued the merits of said rejection, in regards to the epoxy resins having an ester linkage (see, for example, EP 828). Thus, the rejection is maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 12/15/2025, with respect to the rejection of claims 1-5, 7, 11-13 and 18 and claim 22 over Cho et al. under 35 U.S.C. 103; claims 6 and 9 over Cho et al. in view of Kawabe et al. under 35 U.S.C. 103; claim 8 over Cho et al. in view of Swanson et al. under 35 U.S.C. 103; claims 14-17 over Cho et al. in view of Nagasaki et al. under 35 U.S.C. 103; and claims 19 and 22 over Cho et al. in view of Feinberg under 35 U.S.C. 103 as set forth in paragraphs 8-12 of the action mailed 9/17/2025, have been fully considered but they are not persuasives.
The Examiner respectfully acknowledges the commensuration in scope in regards to the presently claimed proportions of the first and second (meth)acrylate monomers and that represented in the inventive examples of Table 2 of the specification as originally filed. Similarly, the presently claimed proportions of the recited (meth)acrylate polymer base material and the epoxy resin are also commensurate in scope with the data presented in Table 3 of said specification.
However, the Applicant is respectfully reminded that, as set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Currently, the Applicant has not provided data to show that the unexpected results do in fact occur for “an effective amount of a photoacid generator,” nor is there any indication from the above-noted data in Tables 2-3 what is, and is not, an effective amount of this claimed compound. For example, Comparative example 5 (CE 5) provides the inventive base polymer material of PE1 in the presently claimed proportions, and the epoxy resin in the presently claimed proportions, but does not satisfy the alleged unexpected results of said Table 3; that is a final overlap shear strength of 0.4 as compared to the lowest value of the inventive examples (2.2 of Example 8). It is noted that CE5 employs 8 parts by weight of the recited photoacid generator (CHIVACURE 1176), while the inventive examples provides the photoacid generator from 0.1 to 5 parts by weight. Thus, it is unclear what constitutes an effective amount of the photoacid generator as there is no data below 0.1 parts by weight and not data interim to 5 and 8 parts by weight. It is also significant to note that CE2 provides the inventive polymer base material and the epoxy resin in amounts outside that presently claimed, and the same proportion of the photoacid generator as the inventive examples, but the final overlap shear strength only deviates from the Example 8 value by 0.5.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/6/2026
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